Thursday, February 08, 2007

Should the "Absurdity Doctrine" Be Introduced to Patent Law?

Over at Patently-O, a bit of a cerebral food-fight has taken place on the comment boards (see here and here) over the past few days regarding the In re Nuijten case, in which the applicant is asking the Federal Circuit to recognize the patentability of signals per se, as opposed to the machines or processes/methods that create them (to listen to the CAFC oral arguments, see here) .

GWU Professor John F. Duffy pointed out that Nuijten is more than a case about potentially expanding the list of patentable subject matter; it is about the fundamental approach to interpreting the Patent Act.

One method of interpreting statutes is through textualism. Basically, textualism is a formalist theory of statutory interpretation which holds that a statute's ordinary meaning should govern its interpretation, to the exclusion of such things as legislative intent, problems to be remedied, etc. It just also happens that textualism is fancied by a good number of Justices over at the Supreme Court (Roberts, Scalia, Kennedy, Thomas and Alito). Perhaps this is no coincidence, but the USPTO's brief to the Federal Circuit also followed a textualist approach in its opposition to Nuijten's patent application (download briefs here, courtesy of Patently-O).

A corollary to the textual approach for statute interpretation is the textual approach to claim interpretation. In the Markman decision, the CAFC explained why its ruling on claim construction did not violate the plaintiff's Seventh Amendment right to a jury trial, and rejected arguments which analogized patent claim construction to the search for the parties' intent in a contract. The majority instead analogized patents to statutes since their judicial interpretations are similar.

Professor Joe Miller, who is the author of the Fire of Genius Blog posted an interesting observation on Professor John Duffy's Statutory Construction Blog regarding some ongoing scholarship being conducted on the "patents-as-statutes" approach to claim construction. His observation questioned if the absurdity doctrine should be applied in claim construction the same way it is used in statutory construction. For those not familiar with the term, the absurdity doctrine allows a court to interpret statutes contrary to their plain meaning to avoid absurd results.

Miller notes:

In the last five years, it seems (to me) that the Federal Circuit has moved strongly against the notion that an absurd claim construction can be avoided; instead, the claim is simply construed with the absurdity, and whatever consequences may follow ensue (e.g., impossibility of infringement, as a practical matter; or inoperability; etc.). It would be interesting, first, to verify my sense of the Federal Circuit cases; and second, to provide a theory, if there is one, that explains why an absurdity doctrine for statutes makes sense and a refusal of absurdity-preventing constructions in patent law also makes sense. Of course, perhaps the better view is that patent law's refusal of an absurdity doctrine points the way we should take with statutes (or vice
At the outset, it would seem that 35 U.S.C. 112 inherently encompasses this doctrine, but I suspect that Miller may be referring to cases that are "on the margin," where the reading of claims in light of their (presumably poor) description in the specification collides with a plausible interpretation that preserves validity.

In any case, it's an interesting topic that deserves a closer look.

Additional Information:

Glen Staszewski, "Avoiding Absurdity"

Lemley & Burke, "Policy Levers in Patent Law" (arguing that technology-neutral legal standards clash with technology-specific innovations)

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